`BEFORE JUDGES EASTHOM, SIU, TIERNEY
`
`Date: January 16, 2014
`
`Case: RPX CORPORATION v. VIRNEXT, INC. AND SCIENCE
`APPLICATION INTERNATIONAL CORPORATION
`
`Planet Depos
`Phone: 888-433-3767
`Fax: 888-503-3767
`Email: transcripts@planetdepos.com
`Internet: www .planetdepos.com
`
`Court Reporting I Videography I Videoconferencing I Interpretation I Transcription
`
`RPX Corporation Exhibit 1077
`RPX Corporation v. VirnetX, Inc. et al.
`Case IPR2014-00172
`
`
`
`UNITED STATES PATENT AND TRADEMARK OF FICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`-- ------- ------- ----- ---------- ---- - --x
`
`RPX CORPORATION,
`
`Pet itioner ,
`
`v .
`
`Case IPR
`
`2014 -001 71
`
`VIRNETX,
`
`INC. AND SCIENCE APPL ICATION
`
`Patent
`
`INTERNAT IONAL CORPORATION,
`
`6 , 502 , 135
`
`Patent Owner
`
`-- - - ------------- ---- ------ - ------- ---x
`
`CONF I DENT IAL - PURSUANT TO PROTECTI VE ORDER
`
`Te l ephoni c Conference Call
`
`Held Before Judges Eastham, Siu, Tierney
`
`Thursd ay , January 1 6 , 20 14
`
`4: 00 p.m.
`
`1
`
`~-
`
`J ob No.: 51086
`
`Pages : 1 - 42
`
`Repor t ed by : Bonnie Panek
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`1 2
`
`13
`
`14
`
`16
`
`1 7
`
`18
`
`1 9
`
`20
`
`21
`
`22
`
`
`
`----·:TELEPHONIC CONfERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`2
`
`A P P E A R A N C E S
`
`ON BEHALF OF PETITIONER RPX:
`
`OLIVER R. ASHE, JR., ESQUIRE
`
`ASHE, PC
`
`11440 Isaac Newton Square North
`
`Reston, Virginia 20190
`
`(703) 467-9001
`
`GREGORY M. HOWISON, ESQUIRE
`
`HOWISON & ARNOTT, LLP
`
`Lincoln Centre II
`
`5420 LBJ Freeway
`
`Suite 660
`
`Dallas, Texas 75240
`
`(972) 479-0462
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`888.433.37671 WWW.PLANETDEPOS.COM
`
`
`
`- - · · · TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SI U. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`3
`
`A P P E A R A N C E S
`
`C 0 N T I N U E D
`
`ON BE HALF OF RESPONDENT VI RNETX :
`
`JOSEPH E. PALYS, ESQUIRE
`
`FINNEGAN, HENDERS ON, FARABOW, GARRET T &
`
`DUNNER, LLP
`
`Two Freedom Square
`
`11955 Fr eedom Drive
`
`Reston, Vi rginia 20 190
`
`(571) 203 - 2700
`
`NAVEEN MODI, ESQUI RE
`
`F INNEGAN, HENDERSON, FARABOW, GARRETT &
`
`DUNNER , LLP
`
`901 Ne w York Avenue , NW
`
`Washington, DC 20001
`
`(?.02) 408 - 4000
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`1 0
`
`11
`
`1 2
`
`13
`
`14
`
`1 5
`
`1 6
`
`1 7
`
`1 8
`
`19
`
`20
`
`21
`
`22
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`- - - · ·TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`A P P E A R A N C E S
`
`C 0 N T I N U E D
`
`ON BEHALF OF RESPONDENT APPLE :
`
`JEFFREY P . KUSHAN, ES QUIRE
`
`JOSEPH A. MICALLEF , ESQUIRE
`
`SIDLEY AUSTIN, LLP
`
`1 501 K Stree t, NW
`
`Wash ing ton, DC 20005
`
`(202) 736 - 8000
`
`4
`
`I
`
`I
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`1 0
`
`11
`
`1 2
`
`13
`
`1 4
`
`15
`
`16
`
`1 7
`
`1 8
`
`1 9
`
`2 0
`
`21
`
`22
`
`888.433.3767 1 WWW.PLANETDEPOS.COM
`
`
`
`• • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
`
`C 0 N T E N T S
`
`5
`
`PAGE
`
`6
`
`15
`
`18
`
`20
`
`23
`
`24
`
`25
`
`27
`
`28
`
`3 1
`
`33
`
`37
`
`E X H I B I T S
`
`(None .)
`
`REMARKS BY :
`
`Mr. Palys
`
`Mr . Modi
`
`Mr. Ashe
`
`Mr. Kushan
`
`RUL I NG ISSUED :
`
`FURTHER REMARKS BY:
`
`Mr. Modi
`
`Mr. Paly s
`
`Mr. Kushan
`
`Mr . Ashe
`
`Mr . Kushan
`
`Mr. Ashe
`
`Mr . Modi
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`1 3
`
`1 4
`
`1 5
`
`16
`
`17
`
`18
`
`19
`
`20
`
`2 1
`
`22
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`· - - - - ·TELEPHON IC CON FERENCE CALL HELD BEfORE JUDGES EASTHOM . SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`P R 0 C E E D I N G S
`
`JUDGE TI ERNEY: Due to the issues t ha t were
`
`6
`
`ra i sed p r eviously, I ' m go i ng t o b egin the ca ll by
`
`as ki ng is every one on t he line at thi s point i n time
`
`s ubjec t to the prot e ct ive order .
`
`If n o t , p l ease speak
`
`up.
`
`I note n o o ne objected to or pointe d out
`
`t hat they were not s ub j ect to the protect i ve orde r.
`
`Ac cordingly, eve r yone o n the li n e today is subject to
`
`t h e b oard s defau l t protect i ve order.
`
`If th e r e 's a ny
`
`que s tions abo ut t hat please speak up now o r we ' l l
`
`begin . Heari ng no objection / we ' ll begin to day.
`
`Vir net X,
`
`I bel ieve we le f t off wi t h some
`
`questions and concerns possibly about a discovery t hat
`
`was occurri ng in d i str i ct cou rt 1 and we wanted to have
`
`a few more d e t a ils, so I' d like you to hRgi.n tod ay by
`
`giv ing u s a littl e background o n t he d i strict court
`
`ac t ion and just a brie f ove r view of
`
`t he n a ture a nd
`
`scope of the discovery t o da t e in those cases as it may
`
`pe rta i n to t h i s p r oceeding today .
`
`MR . PALYS :
`
`Sur e , Your Hon o r. Yeah, as we
`
`left of f the board asked us to look into what d i scovery
`
`888.433.3767 I WWW.PLANETDEPOS .COM
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`1 4
`
`l ~
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`
`
`- - - - - TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU, TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
`
`7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`l ~
`
`16
`
`17
`
`18
`
`19
`
`20
`
`2 1
`
`22
`
`was bei ng sought in the district court li tigation.
`
`We've had time to do that and we ' ve obtained copies of
`
`the discovery reques t, and I 'll be happy to discuss
`
`them with you and get into any details that you want
`
`to .
`
`I'd j ust l ike t o raise a couple of poin ts
`
`be f or e I do that because I
`
`t hink t hey ' re re l evant to
`
`t his type of discovery. The fi rst point , Your Ho nor ,
`
`is that discovery that's sought in that distr i ct court
`
`from RPX i s for purposes of that litigati on . Now, as
`
`you 'l l know
`
`MR. HOWISON: This is Greg Howison.
`
`JUDGE TIERNEY: Tha nk you for joining, and
`
`just confirming you ' re subject t o the protective order?
`
`MR . HOWISON: Yes , s ubj ect to the protective
`
`o rder, yes .
`
`JUDGE TIERNEY: Thank you . Mr. Palys,
`
`p lease continue.
`
`MR . PALYS: Thank you , sir . Now , you ' re
`
`going to see there is some ove r lap with the type of
`
`in formation that's sought in the district court and
`
`with the real party o f interest issues that we 're
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. S!U. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`discussing in these proceedings, but that overlap in
`
`the discovery itself is for purposes of that
`
`litigation.
`
`The second point, Your Honor, is that
`
`currently RPX in that district court proceeding is
`
`refusing to provide any discovery in that litigation
`
`and, in fact, RPX had objected to that discovery before
`
`Mr. Ashe even raised this issue on the call last week.
`
`JUDGE TIERNEY: Mr. Palys, could you please
`
`clarify for us? You say that litigation. Give us a
`
`little background on what you're referring to as that
`
`litigation.
`
`MR. PALYS: Sure.
`
`I'm sorry, sir. So
`
`there's litigation between VirnetX and Apple.
`
`I'm
`
`looking up the captions right now, sir. There's a
`
`matter, Civil Action Number 611CD-563, and that's
`
`pending in the Eastern District of Texas, Tyler
`
`Division, and that's against Apple, Incorporated.
`
`And then there's another litigation ln the
`
`same district, Your Honor, against Microsoft
`
`Corporation, and that's 613CD-351. There's actually
`
`another Civil Action Number for the Apple one I forgot
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
`
`9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`1 4
`
`15
`
`16
`
`17
`
`18
`
`1 9
`
`20
`
`2 1
`
`22
`
`to menti on, Your Honor.
`
`I think they 're the same
`
`act i on ,
`
`ju st different action numbers. Tha t ' s
`
`612CD-855, and in t h ese -- that 's what I wa s r efe rring
`
`to with t hose l itigations .
`
`J UDGE TIERNEY : Tha nk you.
`
`MR . PALYS: Sure . So back to that second
`
`po i nt
`
`MR . ASHE: Your Honor , just since we ' re
`
`discussing t h is litigat i o n, we should note that RPX is
`...
`not a party t o a ny of t h e s uits that we re described .
`
`J UDGE TIERNEY : That 's right . That was
`
`clear from the capt i on at th i s point
`
`. Le t' s let Mr.
`
`Pa l ys have the floor a nd go over t he det ai l s and t h en
`
`you wi ll have an opportu n i ty to chime in, but let ' s
`
`f inish up with Mr. Palys.
`
`MR. PALYS:
`
`Thank you, sir. Cont inuing on
`
`with what I wa s saying, basically the point he r e is
`
`t hat to th e extent RPX may be forced to give that
`
`discovery in t h ose litigati ons, I should say , becau se
`
`t here's t wo o f them , we d on' t know when and i f that may
`
`be.
`
`And l ast l y ,
`
`r eal ly, Your Honor ,
`
`i s that even
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`I
`
`=
`
`
`
`·····~ TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
`
`1 0
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`if RPX i s forced by cour t order or ot herw ise to give
`
`the dis covery that's being sought
`
`in t here it ' s covered
`
`by a protect ive ord er , a nd we raised this I believ e
`
`l ast week if that ' s so .
`
`Even if t he discovery i s available in the
`
`l it igation for . purposes of tha t
`
`l i t i gation we can ' t use
`
`i t here in these proc eedings , and I believe there is
`
`some - - at l east some -- at l east one boar d d ecision
`
`where the board has basicall y left is s ues of the
`
`protective orde r at t he district court l evel to the
`
`district court.
`
`So basical l y given the speed of t hese
`
`13
`
`p r oceedings , we bel i eve t he proper mechan i sm here is t o
`
`14
`
`1 5
`
`16
`
`17
`
`18
`
`1 9
`
`20
`
`2 1
`
`22
`
`address the real party o f int eres t issues i n t hese
`
`proceedings t hrough t he additional discovery me c han i sms
`
`provided und er the rules i n Garmin, and so I just
`
`wanted to make s ure the board is aware of t hose i ss ues
`
`here.
`
`I'm h appy to go into t he discovery that ' s being
`
`sought a nd any det ai l s that the board may want to.
`
`JU DGE TI ERNEY: Well , we're t a lking in
`
`general di scovery sought.
`
`It has been mentioned a t
`
`l e ast from the caption it would appear RPX is not a
`
`888.433.37671 WWW.PLANETDEPOS.COM
`
`
`
`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. T IERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 20 13
`
`1 1
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`1 1
`
`1 2
`
`1 3
`
`14
`
`1 5
`
`16
`
`party . Please explain ,
`
`f i rs t of all , wh y the discovery
`
`wo uld be sought against a nonparty he r e or a t h ird
`
`party, and what is the scope of the dis covery that i s
`
`b e ing sought . You menti oned there was a overlap.
`
`Could you give a few more details?
`
`MR . PALYS:
`
`Sure . So the categories of
`
`in formation sought in the RPX s ubpoenas , Your Honor ,
`
`rela te s to --the RPX ' s corpo rate structure ,
`
`o rganizat i on, what it does ,
`
`i ts inter es t s,
`
`re latio ns h ip, communi ca tions with various companies
`
`i ncluding Apple , Microsoft , Cisco, New Bay , et cetera,
`
`and t hat ' s t he majority o f
`
`t he type of information
`
`sought by the -- t he discovery request in topics.
`
`There ' s also anot he r category that relates
`
`t o VirnetX ' s patents and the variou s I PR petitions ,
`
`rea l par ty in interest, and prior art relat ed to
`
`17
`
`Vi rnetX' s p atent s .
`
`18
`
`19
`
`20
`
`21
`
`22
`
`JUDGE TIERNEY: Okay . So t hey were seeking
`
`discovery in the d i strict court spec i fic to the IPRs?
`
`MR. PALYS : That ' s right.
`
`J UDGE TIERNEY: Okay . And how does that
`
`pertain to the dist r ict court litiga ti on?
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`•••••tTELEPHONlC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SlU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`MR. PALYS: Well, as I understand it there's
`
`12
`
`several issues, I believe, and again I just want to
`
`make sure the record is clear that we don't represent
`
`VirnetX in the litigation, but for terms of
`
`JUDGE TIERNEY: Let me stop there. Do you
`
`represent VirnetX today?
`
`MR. PALYS: Yes, Your Honor.
`
`JUDGE TIERNEY: Okay.
`
`So you're
`
`representing VirnetX in general, so I just want to keep
`
`it clear that when you're speaking you're speaking for
`
`VirnetX today?
`
`MR. PALYS: Yes, Your Honor.
`
`JUDGE TIERNEY: Okay. Thank you.
`
`MR. PALYS: Yes, Your Honor.
`
`So my point
`
`was -- is that there are issues relating to the
`
`litigation why that discovery be sought. One example
`
`would be estoppel issues under Section 315.
`
`There could be entities that may be in
`
`privity with RPX, and if -- for example, if these IPR
`
`proceedings proceed and there's an estoppel that
`
`applies, the issue of who's in privity with that
`
`estoppel may apply in terms of a litigation issue.
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`
`
`. . . . . . . TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. T IERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 20 13
`
`13 -
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`1 2
`
`1 3
`
`14
`
`15
`
`16
`
`17
`
`18
`
`1 9
`
`20
`
`2 1
`
`22
`
`J UDGE TI ERNEY:
`
`Le t
`
`' s s top t oday .
`
`Is Lhe r e
`
`any potential for es t op pe l if we ended th e case t oday
`
`with a noninstitu t ion?
`
`MR. PALY S : Well, my unders tan d i n g i s
`
`t h at
`
`e stoppe l d oe s n ' t appl y until a final wr i t t en dec i sio n.
`
`J UDGE TIERNEY: But you ' v e a lready sou g ht
`
`d iscovery on an i ssue
`
`t h a t
`
`i s no t an act ual i ssue
`
`t h en .
`
`You ' ve take n upon a po t e ntia l
`
`issue t h a t may o r ma y n o t
`
`o ccur .
`
`MR . PALYS : Well, yeah. Again, my -- le t me
`
`-- I just want t o s ay t he reason why I b roug h t u p that
`
`I don 't r eprese nt Virn e tX i n the litigat io n issue i s
`
`not j us t
`
`t o s a y I don ' t
`
`r e pr e s ent VirnetX, Your Hono r.
`
`I just wan t
`
`t o be clear
`
`t h a t
`
`t here's iss u es t hat
`
`litigat ion coun sel may b e b e s t to a d d r ess some o f
`
`t h ese
`
`i ssues .
`
`So I want
`
`t o make sure th at I'm just
`
`mindful, and wh a t I'm s aying here has bee n my b as i s of
`
`rep resenting VirnetX i n the s e p r oceedings , but havin g
`
`said tha t ,
`
`t he i d e a
`
`t h a t they're seeking discover y
`
`during di scovery of a li t igati on I thi nk tha t
`
`- -
`
`I
`
`d on 't see a -- I gu ess a prob l em wi t h d o ing that
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`• • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`because there's a time frame, as you know, to seek the
`
`discovery.
`
`And the estoppel issues that may occur will
`
`I'
`
`eventually
`
`may occur after the -- if an estoppel
`
`issue raises, and of course there's also broader
`
`discovery in district court under at least the federal
`
`rules that apply there, too.
`
`JUDGE TIERNEY:
`
`I would like to know for
`
`purposes of today if VirnetX obtained information it
`
`thought was pertinent to this case through their
`
`discovery in the district court litigation would you
`
`then try and bring that to our attention?
`
`MR. PALYS:
`
`If it was relevant to this case,
`
`absolutely, Your Honor, but the issue here is that --
`
`as I kind of pointed out in the beginning is that it's
`
`not available.
`
`We can't use it under the protective order
`
`right now, so basically again RPX is refusing to
`
`provide any discovery, but if they are for some reason,
`
`if they're compelled to produce this discovery and
`
`there's some overlap of information that's relevant to
`
`the narrow issues that we're discussing for these
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`
`
`• • • • • • >TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM, SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`proceedings, well, certainly we would raise that to the
`
`board's attention.
`
`I mean, the point here is, Your Honor, we're
`
`-- we think that the mechanisms for the proceedings
`
`here are proper through additional -- the additional
`
`discovery mechanisms and the rules allowing such
`
`discovery for these IPR proceedings. There's-- the
`
`fact that there's discovery ongoing in a litigation,
`
`again it is focused toward those issues in a
`
`litigation.
`
`JUDGE TIERNEY; Forgetting the focus to the
`
`litigation issues, but their focus right now is on the
`
`second category to the IPR issues apparently.
`
`MR. MODI: Your Honor, I can try to maybe
`
`address that question. I'll try. So I think that the
`
`issu12 is similar as to what Mr. Palys was saying.
`
`Obviously the reason the IPR issues are -~ were raised
`
`in those subpoenas to RPX in the district court, our
`
`understanding is again for issues raised in the
`
`district court yet, you know, we don't deny having
`
`looked at the discovery.
`
`There is overlap in the type of discovery we
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`··-··~TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU, TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
`
`16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`will be seeking from the board. You know, that's --
`
`obviously was the purpose of the last three calls, not
`
`including this one, but that discovery always was
`
`intended for use in the district court, and one issue
`
`we have is RPX, if and when it gives VirnetX any
`
`information in those litigations, we may not even know
`
`what the information is because it's presumably going
`
`to be marked under the protective order in those cases.
`
`So we may not be -- even though VirnetX may
`
`have that information, Your Honor, or VirnetX's counsel
`
`might have it, as counsel for VirnetX in these IPR
`
`proceedings we may never see that information, so
`
`that's the issue we're having.
`
`But we can assure you that the discovery
`
`that we're seeking is for purposes of the district
`
`court, and as you're well aware to the extent that
`
`discovery is improper for the district court obviously
`
`RPX has already objected and that's an issue for the
`
`district court to decide, and presumably it will decide
`
`that issue at some point.
`
`As we stand today, RPX has objected to every
`
`single request in the district court, and it has
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`. . . . . . . TELEPHONIC CONFERENCE CALL HELD BEfORE JUDGES EASTHOM . SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`1 7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`1 2
`
`1 3
`
`1 4
`
`15
`
`16
`
`17
`
`18
`
`19
`
`2 0
`
`2 1
`
`22
`
`clearly to l d Vir netX it does not intend t o prov i d e any
`
`documents or testimony , so I feel t he i ssue may be moot
`
`at this point. Agai n, we're happy to seek the board ' s
`
`gu i d ance on this i ssue .
`
`If RPX on th i s cal l today
`
`tells us they are willing to g i ve information in the
`
`district court we are more than happy to withdraw t he
`
`reques t here , Your Honor .
`
`We are trying to figure out how do we get
`
`this information i n front of Your Honor in these IPR
`
`p roceedings , because again given the speed of the
`
`proceedings we may be in a situat i on where let ' s say
`
`RPX is compelled to produce that discovery by t he
`
`district cour t in the district court l i ti gation .
`
`It
`
`may be too late . These p r oceedings may be well
`
`underway .
`
`And we obviously would like to bring these
`
`issues up t o the board now through the mechan isms
`
`provided by Garmin , through the AIA, and as you ' re wel l
`
`aware t he trial pra ctice guide ac t ual l y does say one of
`
`t he i ssues that s hould be ra ised early in the cases is
`
`t he real part y in inter est, and that ' s preci sely what
`
`we ' ve done here , so we would of course seek Your
`
`888.433.37671 WWW.PLANETDEPOS.COM
`
`
`
`. . . . . . . TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`Ilonor ' s guidance whe r e we go from he r e , but t ha t ' s our
`
`1 8
`
`pos i t io n .
`
`JUDGE TIERNEY : Anything e l se be f or e I
`
`t u r n
`
`i t ove r to Apple -- I ' ll turn it over next to RPX, but
`
`is t h ere a nything furt he r f r om Vi r net X?
`
`MR. PALYS : No , You r Ho nor .
`
`JUDGE TIERNEY : Okay . RPX ,
`
`i f you ' d l i ke t o
`
`ad dress some of the i ss ues t hat were raised you may do
`
`s o now .
`
`MR. ASHE : Oka y . Thank you, Your Honor .
`
`Fi r s t with r e gard t o t he c ha ract e r i zat io n of t he
`
`s ubpoenas that were served o n RPX,
`
`I disa gree with the
`
`chara c t e ri za t ion t ha t
`
`t hey ' re a nyt hi ng other tha n
`
`d i r ected t o these proceeding s.
`
`And the discover y t hat
`
`t h ey ' re seeking i n
`
`t he d i stri c t co ur ~ i s essen t ia l ly the same a s what
`
`t h e y'r e dr i ving f or h ere , and that i s the unde r l y ing
`
`fac t s for the rea l p a r ty i n i nteres t, a nd I thi nk t h at
`
`You r Honor h a s touch e d on t he app r op ri a t e issue with
`
`resp ect t o the d istrict cou r t, and t hat ' s one o f
`
`ripenes s .
`
`The issue regarding es t oppe l at a min imum is
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`1 0
`
`11
`
`1 2
`
`1 3
`
`14
`
`15
`
`16
`
`1 7
`
`1 8
`
`19
`
`2 0
`
`2 1
`
`22
`
`
`
`---···TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU, TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
`
`19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`not ripe in the district court, and therefore really
`
`isn't an explanation for the timing of these subpoenas
`
`being filed on RPX. The filing of the subpoenas on RPX
`
`coincided with VirnetX's request to access the
`
`documents that were filed under seal with the RPX
`
`petitions.
`
`Therefore, at least from the RPX
`
`perspective, these -- it seems to be a coordinated
`
`effort to really, you know, squeeze the information out
`
`of RPX.
`
`Just basically the district court subpoenas,
`
`if it's not ripe and they're barred from using it in a
`
`because of the protective order, then really those
`
`subpoenas amount to nothing more than harassment, and
`
`that's RPX's position.
`
`RPX has objected to the subpoenas that were
`
`served on it. It is continuing to go through the
`
`district court process, and the context in which I
`
`raised this issue on the last call related to the undue
`
`19
`
`burden and delay that these subpoenas are causing RPX
`
`20
`
`21
`
`22
`
`outside of the IPR proceeding, so I think those are
`
`important points to keep in mind as we go forward. Are
`
`there any other issues you'd like me to address?
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`-----TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`1 4
`
`1 5
`
`16
`
`17
`
`1 8
`
`1 9
`
`20
`
`2 1
`
`22
`
`JU DGE TI ERNEY: Not a t this time . I'll t urn
`
`it over t o Judge Si u , Judge Eastham. Any quest i o n s y ou
`
`have before we go to Apple?
`
`JUD GE EASTH OM: No,
`
`I don ' t ha ve a ny
`
`q uestion s .
`
`J UDGE SI U: No que st i ons.
`
`J UDGE TI ERNEY : Okay . At th i s time we 'll
`
`g et give t he floor to Apple to see if there a r e a ny
`
`comments App l e would l ike to provide o n this is s u e .
`
`MR. KUSHAN:
`
`Thank you, Your Ho no r. We ll,
`
`first and f o remost , we just want to reitera t e o ur
`
`c oncern tha t all t he t hin gs we 're go ing t h rough wit h
`
`t h e brie f ing o r p oss i ble br i e f i ng in t hi s iss u e not
`
`bec ome a reason to de l ay a ny of the p r oceedings .
`
`That's b e e n o ur overarch i ng c oncern wi th e ngage ment o f
`
`this is sue .
`
`I
`
`t hink we look at this issue with kind of a
`
`j aded eye be c aus e the r e ' s an i ssue of fut i l ity . We
`
`assume t hat eve n if you we re t o aut horize di scove r y
`
`you're going to end up with where yo u are t oday wi t h
`
`y our kn owledge of wh a t y ou k now, and what we be l ie ve is
`
`from what y ou already kn o w ther e ' s no bas i s f o r
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`,
`
`' I
`
`
`
`•••••at~ELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`privity.
`
`We would welcome, you know, if the board
`
`deems it appropriate a briefing of the issue to make
`
`sure that there's a clear record as to why you would or
`
`would not grant any discovery, but we look at this with
`
`primarily a concern, it being another diversionary
`
`tactic that might be used to delay the proceedings.
`
`And one question I do have is logistical,
`
`and that is the issues that relate to the privity
`
`question I think pertain to the RPX petitions.
`
`I don't
`
`think there's been any question that Apple's petitions
`
`against the 697 patent are timely filed, and there is
`
`no privity issue, and so if you were to authorize
`
`briefing we just want to make sure we understand how we
`
`would participate in that briefing.
`
`And just as a housekeeping matter, we are
`
`wondering how to get copies of confidential deposition
`
`transcripts that are not being filed in our petitions,
`
`so those are the issues I wanted to raise.
`
`JUDGE TIERNEY:
`
`Is there anything else from
`
`I'll go back to VirnetX before we take a few moments
`
`by the panel and discuss the matter. Anything from
`
`888.433.37671 WWW.PLANETDEPOS.COM
`
`
`
`. . . . . . TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SJU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`VirnetX you need to reply to before we take a brief
`
`recess?
`
`MR. PALYS: No, Your Honor. Unless you have
`
`any questions for us we're open.
`
`JUDGE TIERNEY:
`
`I have no questions at this
`
`time.
`
`I note it's about 4:19.
`
`I'd like to confer with
`
`my colleagues for a couple of minutes. We'll be back
`
`on the line in approximately three or four minutes.
`
`Please have your phones stay on the line while we
`
`10
`
`discuss the matter. Thank you.
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`(There was a brief recess in the
`
`proceedings.)
`
`JUDGE TIERNEY:
`
`The panel has conferred.
`
`Judge Siu, are you back on line?
`
`JUDGE SIU: Yes, I'm back on line.
`
`JUDGE TIERNEY:
`
`Judge Easthom, are you back
`
`on line?
`
`JUDGE EASTHOM: Yes, I am.
`
`JUDGE TIERNEY: Thank you.
`
`Just to confirm
`
`the parties are back on the line, do we have a
`
`representative from VirnetX?
`
`MR. PALYS: Yes, Your Honor.
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`·--··TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. S!U. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
`
`23
`
`JUDGE TIERNEY: RPX?
`
`MR. ASHE: Yes, Oliver Ashe.
`
`MR. KUSHAN: And Jeff Kushan.
`
`JUDGE TIERNEY: Good. The panel has
`
`conferred and come to the following decision. At this
`
`time we will authorize bri e fing, but a very limited
`
`briefing on the issue, whether or not additional
`
`discovery shall be granted. A briefing will be limited
`
`to five pages given that we've already had extensive
`
`discussions.
`
`We've had t hree phone calls already going
`
`into these issues. The question then becomes of
`
`timing.
`
`I believe at the last call we were going to
`
`hav e approximately a week given for filing a motion on
`
`discovery, for additional discovery.
`
`I would like to
`
`start with VirnetX whether or not that one week is
`
`still appropriate.
`
`MR. PALYS: Yes, Your Honor. Of c ourse
`
`we'll entertain anything, earlier dates if the board
`
`would like to discuss that.
`
`JUDGE TIERNEY:
`
`I leave it up to you. You
`
`would be the ones fil~ng the motion.
`
`If you'd like it
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`1 4
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`
`
`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
`
`24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`1 4
`
`1 5
`
`16
`
`17
`
`1 8
`
`19
`
`20
`
`21
`
`22
`
`sooner, that would be fine with us .
`
`If you need a
`
`week,
`
`t hat' s f ine.
`
`I f you need longer, le t' s discuss .
`
`MR. MODI : Your Honor ,
`
`I th in k a week would
`
`be fine.
`
`I d id want to get clarification on the page
`
`limitations, Your Honor.
`
`I assume you ' re saying one
`
`mot i on for al l -- bot h the IPRs?
`
`J UDGE TIERNEY : Yes , I am .
`
`MR : "MODI : Okay . Your Honor, of course
`
`we'll d o our best to meet the limitation , but it may be
`
`nice to just h ave a couple of extra pages, but of
`
`course we'll go with the board 's d iscretion on t he
`
`pages .
`
`JUDGE TIERNEY: Please advis e me why , afte r
`
`t h e three calls , we would need mor e
`
`t han five pages.
`
`I f you d o need it , let me know now .
`
`MR. MODI: Your Ho nor , obvious ly we haven ' t,
`
`you know, written the motion, and if I may just given
`
`we have to go through and , you know, make our case I
`
`was just th in king that five pages may be just -- you
`
`k now, we were thinking more like seven.
`
`It wasn 't
`
`go ing to be a lot . We were just thinking a couple of
`
`extra pages might be helpful, Your Honor .
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`• • • • • • TELEPHONIC CONrERENCE CALL HELD BEFORE JUDGES EASTHOM. StU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`2 5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`1 4
`
`15
`
`1 6
`
`17
`
`18
`
`19
`
`20
`
`2 1
`
`22
`
`JUDGE TIERNEY:
`
`I' ll exercise discretion
`
`today.
`
`I wil l give the seve n pages ab se n t an objection
`
`from my colleagues .
`
`I do not hear an obj ec tion fro m my
`
`colleagues .
`
`I will go ahead and we will a s a pa nel
`
`then give seven pages. Aga in , we want this kept
`
`focused g i ven the amount o f dis cussion we ' ve already
`
`had on t hese i ss ues .
`
`I
`
`t h i nk the question then becomes for
`
`purposes of pu tt ing in opposit ions, we do have two
`
`separat e parties t h at are cha l lenging the Virnet X
`
`patents. The r e are two di ff e r ent cases, and
`
`particularly t here ' s the Apple cases and t h ere ' s also
`
`the RPX cases. How do we h andle t h ose as a procedu r a l
`
`mat ter? Should we have Apple respond and oppose?
`
`Le t's back up.
`
`I s Virne tX seekin g the
`
`additional d iscovery i n t he Apple cases , or is i t
`
`solely in the RPX cases you ' ll be seeking addit i on a l
`
`discovery?
`
`MR. PALYS: We ll , Yo ur Hon or, I 'm glad you
`
`asked that ques ti o n because I did have a quest i on for
`
`the b oar d on this . To answer your question , we're
`
`seeking discover y in t he RPX matt ers, but because Apple
`
`888.433.3767 I WWW.PLANETDEPOS.COM
`
`
`
`. . . . . . . . TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TI ERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
`
`26
`
`- ·
`
`'
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`1 2
`
`13
`
`14
`
`15
`
`16
`
`i s involve d wi th these RP I issues we 're actually going
`
`to ask the board ' s guidance on thi s .
`
`We under stand that your order -- correct me
`
`if I'm wrong, sir -- rela t es to seeking a ddit ional
`
`discovery f rom RPX, but we were wondering what the
`
`procedu r es or what guidan ce the board can give us for
`
`seek i ng di scovery fr om Apple on t hese issues , and it
`
`probably - -
`
`I th i nk we s hou ld be i n the RPX matter, so
`
`I thin k that might be under 4252 .
`
`I'm not quite s ure .
`
`I just wan t ed to seek t h e board's guidan ce o n this .
`
`JUDGE TIERNEY: We l l, this is an interes ting
`
`case because there are d i fferen t pa t ents involved ,
`
`sepa rat e families. However , if you are -- and I wasn ' t
`
`c l e ar.
`
`If you are seekin g in f o r mation from Apple would
`
`i t be appropriate then to just have t he s ame mot i on
`
`file d in bot h sets of cases but be i ng clear as to who
`
`17
`
`you 're seeking which informatio n from?
`
`1 8
`
`1 9
`
`20
`
`21
`
`22
`
`I f you ' re s eeking part ic u la r in formation
`
`from RPX you can identify it as RPX on l y information.
`
`I f
`
`i t 's fr om Apple i t ' s Apple on l y. But it would be - -
`
`the same discovery moti on could be filed in each of the
`
`set s of cases .
`
`Is that a ppropr iat e ?
`
`888.433.3767 I WWW.
`
`
`
`•••••a TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
`
`MR. PALYS: Well, the question I have, or I
`
`27
`
`guess the comment, Your Honor, is that the Apple
`
`matters that I think Mr. Kushan raises, they're
`
`different patents ~~
`
`JUDGE TIERN